DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 05/06/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because it is not clear if “32A” is the same as “32a” and if “31A” is the same as “32a.” Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Status of Claims
Claims 1-6 are as originally filed, Claim 7 is canceled, and Claims 8-12 are new.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language considering the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function
(B) the term “means”, or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”
(C) the term “means”, or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are as follows:
Claim
Means for or Step for
Functional Language
Structure or Material
Disclosure Support
1
n/a
“configured to heat”
“the workpiece”
“heating chamber”; page 9
1
n/a
“configured to cool”
“the workpiece”
“first cooling chamber”; page 12
1
n/a
“configured to cool”
“the workpiece”
“second cooling chamber”; page 13
1
n/a
“configured to supply”
“an exothermic converted gas”
“atmosphere gas supply device”; page 21
2
n/a
“operated to supply”
“the first gas”
“atmosphere gas supply device”; page 35
3
n/a
“operated to supply”
“the second gas”
“atmosphere gas supply device”; pages 36 and 37
9
n/a
“operated to supply”
“the first gas”
“atmosphere gas supply device”; page 35
9
n/a
“operated to supply”
“the second gas”
“atmosphere gas supply device”; pages 36 and 37
10
n/a
“configured to selectively supply”
“the first gas, the second gas and a third gas”
“atmosphere gas supply device”; page 19
12
n/a
“operated to supply”
“the third gas”
“atmosphere gas supply device”; page 32
12
n/a
“operated to supply”
“the second gas”
“atmosphere gas supply device”; pages 36 and 37
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 5, 8, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi (US 2015/0361520 A1).
Takahashi teaches a continuous annealing device as represented below in the annotated drawing:
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723
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The heating chamber is 10 [0047] of the drawings. The workpiece is P. The gas supply system provides a reducing gas or non-oxidizing gas [0039]. The atmosphere in each zone (18 and 20) is independently controlled [0048, 0049] with atmosphere physical separation portions [0051] represented. The degree of atmosphere separation is determined depending on the desired dew point [0053]. The gas supply system includes valves and flowmeters to regulate or stop the gas supply to each delivery port 30 individually [0039]. Figures 4A, 4B, and 5 show that the dew points for each zone, starting at time zero, are different [0069]. The “selectively supplying” as described in the claim with respect to the first and second gases is related to how the heat treatment furnace is used and not a structural limitation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Additionally, the manner of operating the device does not differentiate apparatus claims from the prior art. See MPEP § 2114. The heating chamber in Takahashi can perform the function of differentiating the dew points for each zone, including where the dew point in the second gas is lower than for the first gas. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use [emphasis added]. See MPEP § 2106. Takahashi anticipates the claimed invention
Regarding Claims 4 and 5, the claim does not provide any structural limitations for the heat treatment furnace but functional limitations. As stated above, the manner of operating the cooling chambers does not differentiate the heating chamber taught by Takahashi.
Regarding Claim 8, the claim does not provide any structural limitations for the heat treatment furnace but functional limitations. As stated above, the manner of operating the cooling chambers does not differentiate the heating chamber taught by Takahashi.
Regarding Claim 10, the heating chamber in Takahashi can perform the function of differentiating the dew points for each zone, including where the dew point in the second gas is lower than for a first gas.
Regarding Claim 11, the claim does not provide any structural limitations for the heat treatment furnace but functional limitations. As stated above, the manner of operating the cooling chambers does not differentiate the heating chamber taught by Takahashi.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made because of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6, 8, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/531,088 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. ‘088 claims a heat treatment furnace as recited in the combination of Claims 1 and 4 that read on instant Claim 1. However, one carrying out the heat treatment furnace in accord with the Application ‘088 claims would in fact carry out heat treatment furnace fully within the scope of the instant claims. Thus, no patentable distinction is seen between the heat treatment furnace as presently claimed and the heat treatment furnace as defined in the claims of Application ‘088.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
JP 2011-144402 A (JP ‘402) teaches continuous bright annealing as represented below in annotated Figure 1:
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344
938
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The valves are not configured to supply a gas [0013, 0024] to the cooling chambers that is different, respectively, as in Claim 1 or a gas supply device is operated to supply gas to either the first cooling chamber or second cooling chamber when a bluing treatment is to be performed as in Claims 2, 3, 9, and 12.
CN 110212712 A (CN ‘272) teaches preparing an iron core billet for a motor [0007] with an annealing treatment and air cooling [0033]. After cooling, the billet is subjected to bluing treatment to obtain the motor iron core [0037]. CN ‘272 does not suggest first and second cooling chambers as in Claim 1 or a gas supply device is operated to supply gas to either the first cooling chamber or second cooling chamber when a bluing treatment is to be performed as in Claims 2, 3, 9, and 12.
CN 102443688 A (CN ‘688) teaches a protective gas treatment device for annealing and blueing [sic] regions of a motor iron core thermal treatment furnace (abstract). However, CN ‘688 teaches one cooling region and not two cooling chambers as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2013-181242 A1 (JP ‘242) teaches an annealing furnace with an atmospheric gas delivery unit that is configured to adjust the flow rate of the atmospheric gas via a flow meter [0036] as represented below in the annotated drawing:
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496
672
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The furnace suppresses oxidation of the surface of the metal material [0016], which teaches away from bluing.
JP 2002-285235 A (JP ‘235) teaches an annealing apparatus as represented below in the annotated drawing:
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560
483
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights